Friday, 25 February 2011

A Regional Court in Rio de Janeiro declined to extend the validity of two patents relating to drugs Aprovel (used to lower the blood pressure -- hypertension), and Geodon (used to treat schizophrenia and the manic symptoms of bipolar disorder).

The decision took place last Tuesday February 22 and represents another victory for the Insitituto Nacional da Propriedade Industriale (INPI) regarding the counting of the validity of patents. In the case of Geodon, the expiration date was March 2, 2007, but the manufacturer defended the extension until March 2, 2012. In the case of Aprovel, the original date was March 20, 2010, but the paten right holder wanted to extend it until August 15, 2012.

Jorge Avila, INPI’s president, says that INPI supports the importance of patents for society, but the Institute also helps to limit abuses of these rights

The proceedings in question relate to a mechanism established by Brazilian legislation - the pipeline. The current Industrial Property Law, published in 1996, included the pipeline to protect inventions of pharmaceutical and chemical patents which could not be protected before –Brazil did not grant patent to this types of products. Through this new mechanism, a patent holder would have a year to apply to the INPI counting from the publication of the Intellectual Property Act in 1996. The protection term of 20 years however, was to be counted from the ‘first filing’ abroad. Moreover, the validity period should not surpass 20 years after its first filing.

The Regional Court follows the same principle as other cases posted in this blog, such as: Sifrol, Persantin, Viagra,Lipitor, Gleevec, and Plavix.

Tuesday, 22 February 2011

A combination of inertia on the part of rights owners and ease of infringement has seen a massive surge in the amount of infringement of copyright in recorded music and videos. While iit is open to the Ecuadorian Intellectual Property Institute (IEPI) – the body responsible for monitoring and protecting IP rights – to initiate actions ex officio if such rights are infringed, the high costs involved and a lack of personnel, infrastructure and adequate technology has meant that the IEPI has been unable to combat piracy effectively.

The IEPI has so far initiated actions ex officio under the Intellectual Property Act against 26 stores which sold unlicensed CDs and DVDs, inflicting fines of approximately $1.8 million on each occasion. If such fines are not paid, criminal action will be taken. In response to these actions the Ecuadorian Association of Audiovisual Product Traders has filed a constitutional claim against the IEPI under Article 325 of the Constitution.

The Chilean newspaper El Mercurio approaches today President Barack Obama’s visit to Chile (in a month time). It refers to the tight agenda and two of the main topics that are to be discussed, namely energy and intellectual property. Javier Irarrázaval, the Chamber of Commerce Chilean-American (Amcham) president , believes that president Obama's visit will be a very good opportunity to strengthen the strategic alliance that Chile and the U.S. began in 2008 on energy. "The United States has positioned itself as a leader. It takes the lead as a supplier, developer and patent holder in virtually all technologies" he says.

Continuing he states that Amcham has concerns in the scenario faced by Chile. "If we want to grow and generate business we need energy at competitive costs". Mr Irarrázaval, who is in favour of sustainable sources, emphasizes the need to be realistic.

The second point to be raised in this visit will be the protection of intellectual property. In 2010, Chile ranked for the fourth time on the ‘Priority Watch List’, which groups countries that lack intellectual property protection. Mr Irarrázaval asserts that they “do not want to continue on the Watch List”. He appears to be astonished to the fact that in Chile there is not the necessary protection to safeguard industrial property, because according to him (and I guess every reader on this blog), this fact undermines entrepreneurship and innovation.

Researchers from the Brazilian Instituto Nacional da Propriedade da Industrial (INPI) carried out a study on the ethanol production chain. According to their study “Bioethanol from sugar cane”, Ethanol is one of the Brazilian assets in global debates (on biofuel), however Brazil will no longer gain a competitive (and market share) if they do not invest more in research and technological development.

The source went on to explain that Brazilian companies and citizens dominate patent applications when related to ethanol. Yet, when more complex processes related to biotechnology such as fermentation to produce the fuel, Brazil already shares the lead with the US. At this stage they rely on numbers: 656 patent applications were made between 1974 and 2006, Brazil accounts for 442 (68% of total), well ahead of the US. Note that this national technology refers to equipment and processes of planting, harvesting and soil preparation. However, when speaking of fermentation from microorganisms for ethanol, the US accounts for 25% of patent applications against 24% in Brazil. Japan appears close behind with 15%.

The researchers observe that fermentation is even more important for the development of “second-generation ethanol". Their conclusion is that Brazil needs to invest heavily in research so that it will not lose its position in the business of biofuel.

Sunday, 13 February 2011

A review of the current state of Mexico's patent law, following the decree of 18 June 2010, assesses this major change in the Industrial Property Law 1994. It covers (i) amendments to the definition of 'industrial applicability'; (ii) the partial priority rules; (iii) a new system for oppositions to patent applications during prosecution; (iv) monitoring of counterfeiting and performance of inspections by the Mexican Institute of Industrial Property and (v) new infringement claims in order to protect trade dress more effectively and prevent abuses of patent rights, particularly in the light of the interests of the pharmaceutical industry, which the changes are said to benefit.

The authors of this review conclude that it will not be until the first cases pass through the courts that the precise effect of the various changes will be seen. The changes were designed to keep both sides of the pharmaceutical industry satisfied, strengthening the hand of both patent holders and their opponents and eliminating delays. They warn, however, that if the amendments

"... merely created a system that is unfair to both sides, they may have drawn the battle lines for disputes that will be detrimental to the Mexican patent system and Mexican business at an international level".

Source: "Reform for pharmaceutical patents: fair balance or fresh disputes?", prepared for International Law Office by Héctor Elias Chagoya and Juan Carlos Amaro of Becerril, Coca & Becerril SC, Mexico (an earlier version of this piece was published in IP Value 2011 - An international guide for the boardroom, by IAM magazine).

Friday, 11 February 2011

The Brazilian Instituto Nacional da Propriedad Intelectual (INPI) informs that the Brazilian Superior Court of Justice (STJ) denied on February 8, 2011, extending the period of two patents relating to drugs Sifrol (used to fight Parkinson's disease) and Persantin (against thrombosis).

This decision follows the understanding of the STJ regarding the pipeline system. The STJ has in several occasions rejected the extension of patents such as: Viagra, Lipitor, Gleevec, and Plavix.

The pipeline system refers to a mechanism established by Brazilian Intellectual Property Law 1996. It refers to the protection of inventions of pharmaceutical and chemical patents that could not be registered before under the old legislation. This considers the possibility of protecting under the patent system chemical substances, compositions and products, through a ‘pipeline’ mechanism, which should be counted from the ‘first filing’ abroad. Through the mechanism, the patent would have a year to be made to the INPI and worth the time remaining in the country where it was ‘first file’ and its validity cannot exceed 20 years.

Thursday, 10 February 2011

President Obama has instructed Ron Kirk (United States Trade Representative) to step up with Colombia and Panama as to resolve any outstanding issue. The goal is to approve both FTA: the US with Colombia and the US with Panama.

To this effect next week Mr Kirk is sending to Colombia a delegation to begin the process. However, he warns that "any schedule will depend on resolving" issues like labour right protection and human rights.

I presume that if the FTA between the US and Colombia is finally ratified by the US Congress, many can raise again hopes that the adoption of the Madrid Protocol is a certain fact.

Few months back this blog raised the issue that in this FTA there was a footnote where Colombia committed itself to accede to the Madrid Protocol. Also we need to remember that the FTA between the EU and Colombia do cover this issue as well.

That said, does it mean that Colombia will discuss the Bill 234/2009, concerning the adoption of the Madrid Protocol? Will it be any time soon?

Wednesday, 9 February 2011

The national newspaper “O GLOBO” reported today that Mr. Jorge Ávila has been maintained by the Ministry of Development, Industry and Commerce as the President of the Brazilian Patent and Trademark Office (BPTO).

This information is understood as recognition of the work so far led by Mr. Jorge Ávila in the last 4 years ahead of the BPTO and represents that the new President of Brazil – Mrs. Dilma Rousseff – will keep the policy of improving the services rendered by the local agency of patents and trademarks.

Another important task undertaken by Mr. Jorge Ávila has been the hiring of personnel with technical background to assist the existing patent and trademark examiners and the reduction of the backlog of work. In this matter, trademark prosecution is taking nowadays approximately 24 months to be concluded and patent prosecution approximately 5 years, instead of the 7 years previously seen at the agency.

Mr. Jorge Ávila has promoted consistently partnerships and cooperation with main patent and trademark offices, such as the USPTO, the UK Intellectual Property Office and patent offices of Latin America.

His maintenance in the office should be made officially public in the next couple of days.

Flavio Arosemena (Arosemena Burbano & asociados) and Alfonso Rivera (Tobar y Bustamante) have sent IP Tango information concerning a recent decision by the Tenth Provisional Judge of Criminal Guarantees of Guayaquil (Sorry, this translation sounds awful!). The decision concerns a dispute we have already talked about in IP Tango about the complaint of a wholesalers association against IEPI. The association understood that actions of IEPI to seize counterfeited products were a violation of constitutional right to work of professionals of the wholesale business.
The decision states that copyright and intellectual property rights are considered rights recognised in the Ecuatorian Constitution. Furthermore, the judge states that illegal or semi-illegal activities cannot be justified on the existence of a constitutional right to work.
The inmediate consequence of this decision is that the actions adopted by IEPI to protect intellectual property rights are considered as legal.

Algeria, Brazil, Colombia, and Yemen appear to be keen to sign the protocol (open for signature until 1 February 2012) and having a quick look at it, it appears too mellow. The protocol is full of words such as ‘recognizing, acknowledging, and reaffirming’. However, the text has been considered by some as not quite there (can we say ‘immature’?). The critiques focus on the fact that the text is open to interpretation and ‘much left to national level implementation.’ This view can be observed in some of the Articles which state for example: ‘in accordance with domestic law’; ‘subject to domestic law’; ‘ as appropriate’; to name a few.

However, the protocol needs to be ratified by at least 50 parties and would enter into force 90 days after the fiftieth ratification. I guess we can start counting now – there are less than 360 days to see if the protocol will be (or not) ratified.

What is the fuss about? The protocol is very much ‘what it says on the tin’ -- fair and equitable share. That said, it is for every party to interpret according to their domestic legislation and procedures. In general, the text is bringing into attention the following: when you have the ingredients to make a cake and do not know how to make one, along comes someone uses the ingredients and leave with the whole cake! This is pretty much what the Protocol is establishing, you cannot leave with the whole cake, and you need to recognise and acknowledge the party that gave you the ingredients.

Sunday, 6 February 2011

Last August, in Expobicentenario SA v Arte Gráfico Editorial Argentino SA (Case 3201/10), the Argentine Court of Appeals denied injunctive relief to prohibit use of the phrase 'Argentina 200 años' ("Argentina 200 years") by the defendant. Expobicentenario had earlier secured trade mark registration of the word mark ARGENTINA 200 AÑOS, for goods and services in Classes 16, 35 and 41 of the Nice Classification. Media giant Arte Gráfico Editorial Argentino subsequently published a supplement of its Clarín newspaper to commemorate the 200th anniversary of Argentine independence using the expression 'Clarín Bicentenario 1810-2010', as well as 'Argentina 200 años'.

Refusing the injunction the Court of Appeals held that, according to the law, “use of a third party’s mark in a non-typical manner is not necessarily illegal”. Here, the phrase 'Argentina 200 años' was not used as a trade mark, but in a descriptive way. The presumption that freedom of expression should be limited when a phrase contains a trade mark must be rejected when the mark is not used in a distinctive way. Such use does not fall within the scope of protection of the trade mark.

Tuesday, 1 February 2011

From Marques Class 46 blog I read that the Consorzio del Formaggio Parmigiano Reggiano has submitted in Colombia an application for recognition of its Parmigiano Reggiano as an Appelation of Origin (AO).

Colombia being part of the Andean Community of Nation (formed by Bolivia, Colombia, Ecuador, and Peru) operates a customs union similar to the EU and it boasts a common IP regime governed by Decision 486. Geographical Indication is found under Title XII and AO definition under Art 201, regulating though this subject.

Under the Free Trade Agreement (FTA) signed between the EU and Colombia and Peru, Parmiggiano Reggiano appears on the list (more than 200 products are listed – only 4 are from Colombia and Peru). Looking further the FTA, under title VII named Geographical Indications (GI), clarifies that GI of a Party to be protected by the other Party, shall only be subject to this Title if they are recognised and declared as such in the country of origin. This implies that the parties each accept that the other party’s domestic examinations are also sufficient for their domestic market. As we may know Parmiggiano Reggiano not only enjoys protection in its own country but in the whole European Union (also in those Members States that are parties to the Lisbon Agreement since this GI has been registered under this regime).

That said, here comes my questioning: why is the Consorzio looking for this further protection? There is the issue that though the FTA has been signed, it has not entered into force as yet -- is this a sign? I feel that this cheese does not smell right.

Moreover, will the other 228 EU products apply for this recognition? Or is just this stinky cheese that wants to have another slice of protection?